INTELLECTUAL PROPERTY LAW REVIEWER designs issued and approved, and

the technology transfer registered.

THE INTELLECTUAL PROPERTY OFFICE
f) Adjudication of contested
Intellectual Property Rights consists of the proceedings affecting intellectual
following (Sec.4): property rights.
g) Coordinate with other government
a) Copyright and Related Rights
agencies
b) Trademarks and Service Marks
c) Geographic Indications Custodial Power of the IPO (Sec.5.2)
d) Industrial Designs
Over records, drawings specification
e) Patents
documents and other papers and things
f) Layout Designs of Integrated Circuits
relating to intellectual property rights
g) Protection of Undisclosed
applications.
Information
Organizational Structure (Sec.6):
What is a Technology Transfer Agreement?
 Headed by a Director General
Section 4.2 defines, contracts or
assisted by two deputies.
agreements involving transfer of systematic
knowledge for manufacture of a product, Consists of 7 Bureaus and Power of each:
application of a process or rendering of a
1. Patent - Patent Application, Registration
service, including management contracts
of Utility Models and integrated circuits
and transfer, assignment or licensing of all
forms of intellectual property rights. 2. Trademarks - Registration of Marks,
geographic indications and other marks of
IPO Function:
ownership, issuance of certificate of
Section 5.1 registration
Examine the following: 3. Legal Affairs - Hear and Decide on the
opposition and cancellation of the
a) Application for grants of letter of
application of the following: marks, patents,
patents, register utility models and
utility models and industrial designs and
industrial designs
petition, also petition for compulsory
b) Registration of marks, geographic
licensing of patents
indications, integrated circuits
c) Register technology transfer Original Jurisdiction in administrative
arrangement, settle disputes complaints for violation of IP Laws, limited
involving technology transfer to total damages of not less than
payments. 200,000.00 PHP
d) Promote use of patent information
Provisional Remedies that may be granted
e) Publish regularly in its own
subject to provisions of R.O.C.
publication the following: patents,
marks, utility models and industrial
Director has the power to punish for Powers of the Director General (Sec.7):
contempt those who disregards writ issued
a. Manage and direct all functions and
in the course of proceedings
activities of the Office
May impose any of the following b. Exclusive appellate jurisdiction over
administrative penalties after formal decisions rendered by the ff.
investigation: Directors:
 Legal Affairs
1.) Cease and desist order
 Patents
2.) Acceptance of a voluntary assurance
 Trademarks
of compliance or discontinuance
 Copyright and other related
3.) Condemnation/seizure of products
Rights
subject of the offense
4.) Forfeiture of paraphernalia and all  Documentation, information
real and personal properties used in and technology transfer
the commission of the offense and; c. Enforcement Powers
5.) Imposition of fines not less than d. Visitorial Powers over
5,000.00 nor more than 150,000.00 establishments and businesses
6.) Cancellation of permit, license, violating provision of IPL
authority or registration; Where to appeal decision of D.G. (Sec.7.b)?
7.) withholding of any permit, license,
authority or registration.  C.A. if original decision comes from
Patents, Trademarks and Copyrights.
4. Documentation, information and  DTI Secretary if decision comes from
technology transfer D.I.T.
5. Management Information System and Qualifications of Director General(Sec 7.2)
EDP
1. Natural Born Filipino Citizen
6. Administrative, Financial and Personnel 2. At least 35 years of age at the date
Services of appointment.
7. Copyright and other related rights - 3. Member of the Phil. Bar and 10
Original Jurisdiction to resolve disputes years in the practice of la
relating to terms of license, accept, review Term of Office?
and decide on applications for accreditation
of collective management organizations. 5 years and can be re-appointed but only
once.
Who appoints (Sec.6.3)?
1. Director General, Deputies,
Directors and Assistant Directors -
President
2. Other officers and employees -
Office of DTI Secretary
LAW ON PATENTS What is a prior art?
General Provisions Anything which has been made
available to the public anywhere in the
Priority Date- date of filing of the foreign
world, before the filing or the priority date
application for the same invention
of the application claiming the invention.
(Sec.20.6)
(Sec.24)
Patentability of an Invention
2. Inventive Step - having regard to prior
Patentable Invention (Sec. 21) art, it is not obvious to a person skilled in
the art (Sec. 26).
Any technical solution of a problem in any
field of human activity which new, involves 3. Industrial Applicable - can be produced
inventive step and is industrially applicable and used in any industry (Sec.27)
maybe a product or process or
What is a non-prejudicial disclosure?
improvement of both
(Sec. 25)
Non-Patentable Invention (Sec.22) Disclosure of information contained
in the application which was made during
1. Discoveries, Scientific theories,
the 12 months preceding the filing date or
mathematical methods. For Drugs
priority date that does not prejudice the
and medicines mere discovery of
applicant on the ground of lack of novelty if
new form or property that does not
disclosure was made by:
improve the efficacy.
2. Schemes, rules and methods of a. Inventor
performing mental acts, playing b. Patent office and information was
games or doing business, program contained i) in another application,
for computers applied by another inventor and
3. Methods for treatment of human or should not have been disclosed by
animal body the office, ii) application filed w/out
4. Biological process to produce plants the knowledge or consent of the
or animals, except microbiological or inventor by a third party
microorganisms or non-biological c. Third party who obtained the info
processes. directly or indirectly from the
5. Aesthetic creations. inventor
6. Anything contrary to public order or
RIGHT TO PATENT
morality.
Who has right to a patent? (Sec.28)
Elements of Patentable Inventions:
1. Inventor, his heirs, or assigns
1. New/Novelty (Sec.23) - if forms part of a
2. If made by two persons, right
prior art an invention will not be considered
belongs to them jointly
new.
First to file Rule- if two different persons b. to the employer, if the invention was
made an invention independently and a result of his regularly assigned
separately right to a patent belongs to the duties, unless there is an agreement.
person who filed a patent for such invention (Sec.30.2.b)
If an application was made for the same PATENT APPLICATION
invention, applicant that has the earlier
Formal Requirements for a Patent
filing date or priority date. (Sec. 29)
Application, must be in English or Filipino
What is a priority date? (Sec. 31) must contain the following (Sec.32):
A patent application filed in a foreign a. Request for grant of patent -
country, provided that said country's laws Petition of patent, name and other
affords similar privileges to Filipino Citizens data of the applicant, inventor and
the agent, title of the invention
Requisites for Priority Date:
(Sec.34)
1. Local Application expressly claims b. Description of the Invention -
priority. Application shall disclose the
2. Filed within 12 months from the invention in a manner sufficiently
date of the earliest foreign clear and complete for it to be
application was filed. carried out by a person skilled in the
3. Certified copy of the foreign art. If concerns microbiological
application with English translation process, micro-organism application
filed within 6 months from filing shall be supplemented by a deposit
here in the Philippines. of such material with an
international depository institution
For inventions created pursuant to a
(Sec. 35)
commission, right to a patent belongs to?
c. Drawing - necessary for the
Person who commission the works, understanding of the invention
unless the contract stated the contrary. d. One or more claims - Shall define
(Sec. 30) matter for which protection is
sought. Shall be clear and concise
What if the invention was made in the
and shall be supported by the
course of an employment contract?
description (Sec.36).
a. It shall belong to the employee, e. Abstract - concise summary of the
provided that the invention was disclosure of the invention as
made outside of the regular duties contained in the description, claims
assigned to the employee, and drawings, preferably not more
regardless even if the employee uses than 150 words. Drafted in a way
the time, facility and equipment of which allows the clear
the employer. (Sec. 30.2.a) understanding of the technical
problem, gist of the solution through
 the invention and the principal use Effect of not submitting any of the
or uses of the invention. Serves elements (Sec.40.2)?
merely for technical information.
- Application is deemed withdrawn
(Sec. 37)
- If the requirements are satisfied a
What is Unity of invention? filing date will be accorded.
An application shall relate to one invention What if the requirements are not satisfied?
only or to a group of inventions forming a
- Application considered withdrawn
single general inventive step. (Sec.38)
Publication Requirement (Sec.44)
What if the applications contain inventions
that does not a form a single inventive - Patent Application shall be
step? published in the IPO Gazette
Application may be divided. (Sec.38.2) Effect if not published?
How about the filing date? - A non-publish application shall not
be subjected to any inspection
An invention that has been severed from
without the consent of the
the original will have the filing date of the
applicant.
first application. Provided the following:
Rights conferred to an Application after
1. Later application shall be filed within
publication (Sec.46):
4 Months after the requirement to
divide becomes final. Shall have all the rights to a patentee under
2. Divisional application shall not go Sec. 76 (Civil Action for Infringement)
beyond the disclosure in the original against any person who without his
application. authorization exercised the rights under
section 71.
Does non-compliance with unity of
invention requirement ground to cancel Provided that the violator has
the patent?
(Sec.46.1 &2):
No. (Sec.38.3)
a. Actual knowledge that the invention
PROCEDURE FOR GRANT OF PATENT that he was using was subject of an
application.
Filing date-Date of receipt by the Office of
b. Received a written notice informing
at least the following elements (Sec.40):
him that the invention he was
a. express or implicit indication that a exploiting was subject of a patent
Philippine patent is sought. application.
b. information identifying the
NOTE: Action may be brought only after
applicant.
grant of patent provided it is still within 4
c. description of the invention and one
or more claims.
years from the commission of the act. - Paid 4 years after application is
(Sec.46.2) published.
- Subsequently, every anniversary of
May the applicant amend the application?
such date, paid within three months
Yes, if it does not include new matter before the due date
outside the scope of the disclosure
When will the obligation to pay the annual
contained in the application as filed.
fees terminate (Sec.55.1)?
(Sec.49)
Upon any of the following:
Patents are granted upon (Sec.50):
a. Withdrawal of the application
1. application meets the requirement
b. Refusal of the application
2. upon payment of the required fees c. Cancellation of the application
Effect of non-payment of the required Effect of non-payment of annual fees
fees? (Sec.55.2)?

- Application is deemed withdrawn a. Application for patent deemed

(Sec.50.2) withdrawn or the patent will lapse.
b. Notice for the lapse of payment of
Date of effectivity
annual fees shall be published in the
- Date of publication of the grant in IPO Gazette and be recorded in the
the IPO Gazette (Sec.50.3) Registry of the IPO.

What if the application has been refused? Is there a Grace Period (Sec.55.3)?

- Final order of refusal of the - Yes, 6 months grace period granted

application is appealable to the upon payment of surcharges for
Director of Patents. (Sec.51.1) delayed payment.

Contents of the Patent (Sec.53): Can a Patent be surrendered (Sec.56)?

a. Issued in the name of the Republic Yes.

of the Philippines under the seal of
Who may surrender the patent?
the office and shall be signed by the
Director Owner, with the consent of all persons
b. Registered together with the having grants or licenses or other right, title
description, drawings and claims. or interest in and to the patent and the
invention covered.
Patent Term (Sec.54)
Purpose of Surrender?
- 20 years from the filing date of the
application - Cancellation of the Patent

Annual Fees (Sec.55)? Can surrender of patent be opposed?

 - Yes. No request may be made after the
expiration of 2 years from the grant of a
How?
patent and the change shall not affect the
- By giving notice to the office of his rights of any third person which relied on
opposition to the surrender of the the patent as published. (Sec.59.1.c)
patent.
No change shall be permitted if doing so will
Action by the Bureau of Patents? result to the going beyond in the disclosure
provided in the application (Sec.59.2)
- Notify the proprietor of the patent
and resolve the issue. Form and Publication of Amendment
(Sec. 60)
Effect of surrender if the offer was
a. Via Certificate of Amendment or
accepted.
correction, authenticated by the
- Patent shall cease to have effect. Seal of the office and signed by the
Director.
Limitations (Sec.56.3):
b. Certificate shall be attached in the
- No action for infringement shall lie Patent.
and no right for compensation shall c. Amendment shall be published in
accrue for any use of the invention the Gazette.
before that day for the service of the
Grounds for non-publication
government.
If it is prejudicial to the national security
Mistakes in the Patent (Sec.57 & 58)?
and interests of the Republic of the
If by the office: can be corrected freely, to Philippines (Sec. 44.3)
conform with the records.
Cancellation of Patent (Sec. 61-66)
If by the applicant: by request of any
Who can request cancellation of Patents?
interested person and upon payment of the
required fees. - Any interested person after payment
of the required fee. (Sec.61.1)
Changes in the Patent (Sec.59)
Grounds for cancellation:
Reason for change:
a. Invention is not new or patentable
a. Limit the extent of the Protection.
b. Description in the patent is not
b. Correct obvious mistakes and
sufficient and complete for it to be
clerical errors.
carried out by a person skilled in the
c. Correct errors other than those in
art.
letter B.
c. Patent is contrary to public order or
Limitation in the Right for Correction morality
 - Amended patent shall be published
in the IPO Gazette together with
Formal Requirements for the Petition
other supporting documents
(Sec.62)
indicating the amendment made.
1. Shall be in writing
Is the cancellation order immediately
2. Verified
3. Grounds specified executory? (Sec.66)
4. Facts constituting the grounds - Yes, even pending appeal, notice of
5. Supporting documents (published cancellation shall be published in the
articles and patents from other IPO Gazette.
countries)
Notice? (Sec.63) XPN: Unless, restrained by the Director
General.
- Yes, served by the Director of Legal
Affairs. Shall be published in the IPO Remedy of A Person with A Right to A
Gazette. Patent (Sec.67)
Committee of Three - Composed of the Other than the applicant, the person
Director of Legal Affairs as chairman, and having the right to the Patent, thru a court
two members with expertise and order or decision and after 3 months after
experience for the specific technology the the finality of the decision or order may do
patent relates to. Cases involving technical the following (Sec.67.1):
issues. (Sec.64)
1. Prosecute the application as his own
Committee of Three Decision where replacing the prior applicant.
appealable? 2. File a new patent application
concerning the same invention.
- Director General.
3. Request for the refusal of the
If cancellation is warranted? application.
4. Cancel the patent if there is already
- Committee will order that the
one issued.
patent be cancelled. (Sec.65.1)
Remedy of the True and Actual Inventor
If the defect in the Patent can be cured?
(Sec.68):
- Amendment of the Patent, the
How does a true and actual inventor
Patent will be maintained, provided
determine?
fee for payment of printing of new
patent is paid within the time - By virtue of a court order or
prescribed. (Sec.65.2) decision.
What if not paid in due time? His Remedies?
- Patent will be revoked. (Sec.65.3) Court order can state the following:
1. Substitution as patentee.
 2. Cancel the patent.
3. Award of actual and other damages.
Limitation to Such Right (Sec.72):
Does the court order needed to be
Patent owner has no right to prevent the
published (Sec.69)?
following:
- Yes, the Court shall furnish the IPO
1. Using of a patented product which
with a copy of such order or
has been put in the Market by the
decision.
Patent Owner with his express
- To be published in the IPO Gazette
consent, provided product has been
within 3 months after the Decision
in used after the placing of the
becomes final and executory which
product in the market.
shall be recorded in the Office
2. Use of Drugs and Medicines,
Register.
provided that the Drugs and
Prescriptive Period (Sec.70): Medicines has been introduced in
the Philippines and anywhere in the
- 1 year from the publication of the
world.
application or patent.
3. Act is done privately and in a non-
Rights of Patentees and Infringement of commercial scale or purpose, if it
Patents (Sec.71) does not prejudice the economic
interest of the patent owner.
Subject matter of the Patent is a Product
4. Exclusively for experimental use,
- Restrain, prohibit and prevent scientific and educational purpose,
unauthorized persons from making, and other activities directly related
using, offering for sale, selling or thereto.
importing the product. 5. For Drugs and medicines, solely for
purposes of development and
Subject matter is a process:
submission of information for the
- Restrain, prohibit and prevent issuance of approval by government
unauthorized persons from making, regulatory agencies.
using, offering for sale, selling or 6. If for individual cases, and that use
importing the product obtained of medicine is in pursuance of
DIRECTLY or INDIRECTLY from such medical prescription.
process. 7. Invention is used in any ship, vessel
- Right to assign. or aircraft or land vehicle and such is
entering Philippine territory
Right to transfer via Succession.
temporarily or accidentally,
Right to conclude licensing contracts for provided that the invention is used
the Patent. exclusively and not for
manufacturing of products to be
sold in the Philippines.
 d. A public non-commercial use of the
patent by the patentee without
satisfactory reason.
Who is a prior user (Sec.73)? e. Demand for the patented article in
the Philippines is not being met
- One who in good faith is using the
adequately.
invention or has undertaken
preparations to use such in his Use of the Government and authorized
enterprise or business, before the third persons are subject to the following
filing date or priority date of the conditions (Sec.74.2):
application on which a patent is
a. Situations of national emergency -
granted.
right holder shall be notified as soon
Rights of a prior user (Sec.73.2) as reasonably practicable.
b. Public Non-Commercial Use - right
- Right to continue the use within the
holder shall be informed promptly.
country where the patent has its
c. Demand not being met to an
effect.
adequate extent- right holder shall
Condition Precedent before a prior user be informed promptly
may transfer his rights: d. Scope and duration limited to the
purpose it was authorized.
- Right should be transferred together
e. Use non-exclusive
with his enterprise or business or
f. Right holder shall be paid adequate
any part of business or enterprise in
renumeration.
which use or preparations have
g. Existence of National Emergency -
been made.
shall be Determined by the
Can the Government or any authorized President
person exploit the invention even without
Jurisdiction on cases arising from
an agreement with the Patent Owner
abovementioned provision (Sec.74.3)?
(Sec.74)?
- Courts of appropriate jurisdiction.
Yes, in the following conditions:
TRO and Preliminary Injunction and other
a. For public interest i.e. national
provisional remedy?
security, nutrition, health or the
development of other sectors. - Only the SC can issue.
b. If a judicial or administrative body
Extent of Protection of a Patent (Sec.75)?
has determined that the exploitation
of the patent is anti-competitive. - Determined by the claims stated.
c. For drugs and medicines, there is a
Purpose of determining protection
situation of national emergency or
(Sec.75.2)?
circumstance of extreme urgency.
 - To cover not only claims expressed
but also claims that has an
equivalent, provided elements are
satisfied. What will happen to the products infringed
(Sec. 76.5)?
Patent infringement
- Court in its discretion shall order the
Making, using, offering for sale,
removal of the articles in every
selling or importing a patented product or a
channels of commerce and be
product obtained directly or indirectly from
destroyed without compensation.
a patented process without authorization of
the Patentee (Sec.76.1) Contributory Infringer (Sec.76.6)
The following are not considered as Patent - Anyone who actively induces
Infringement: infringement of a patent or provides
infringer components of the
1. Limitation of Patent Rights
patented product or of a product
2. Use of Invention by Government
produce using patented process
3. Compulsory Licensing
4. TRIPS Agreement Liability?
Who may bring Civil Action for Patent - Severally liable.
Infringement?
Can a foreign national institute an action
Any patentee or anyone possessing for patent infringement (Sec.77)?
any right title or interest in and to the
- Yes, under Section 3 (Reciprocity).
patented invention whose rights have been
infringed (Sec.76.2) Presumption, products produced using a
patented process (Sec.78).
Remedies Available (Sec.76.4):
Identical products shall be presumed to
1. Damages
have been obtained produced using a
2. Atty.'s Fees and other expenses of
patented process.
litigation.
3. Injunction Burden of Proof?
What if the damages cannot be - On the patent owner.
ascertained?
What if the Patent Owner cannot
- Sum equivalent to reasonable determine if it is really the patented
royalties. process used to produce the Product?
Can it go above the actual damages? - Court shall order the defendant to
reveal his process to prove that it is
- Yes, provided it does not exceed 3
different from the patented product,
times the amount of the actual
but in doing so the court shall adopt
damages.
 measures to protect his Purpose-Transfer and dissemination of
manufacturing and production technology. (Sec. 85)
secrets.
Prescriptive period?
- 4 years
Technology Transfer Arrangement
Can damages be recovered if the infringer
Jurisdiction to settle disputes arising
did not know the existence of the patent
technology transfer arrangement including
or application?
fixing of amount of royalties?
- No, Sec. 80, damages cannot be
- Director of the Documentation,
recovered for acts of infringement
Information and Technology
committed before the infringer had
Transfer Bureau (Sec. 86).
known or had reasonable grounds to
know of the patent.
Presumption of Notice Prohibited provisions on a Voluntary
Licensing Agreement, due to being adverse
- Container, packaging advertising has
on competition and trade (Sec.87):
in it the word "PHILIPPINE PATENT"
with patent no. 1. Imposing licensee to acquire from a
specific source.
Defenses for action (Sec.81)
2. Reserving the right to fix sale/resale
a. Patent is invalid. prices of products to the licensor.
b. Grounds for cancellation under Sec. 3. Restriction on the volume and
61. structure of production.
4. Prohibition on the use of
What if in an action for infringement it was
competitive technology in a non-
found that the patent was invalid?
exclusive technology transfer
- Court shall cancel said patent and 5. Establishing a full or partial purchase
the Director of Legal Affairs after in favor of the licensor
receiving the record from court shall 6. Obligating the licensee to transfer
cause the recording of it in the office any for free inventions or
registrar. improvements obtained using the
licensed technology.
What if the Infringer repeated the act
7. Requiring payment of royalties not
(Sec.84)?
used.
- Infringer will be criminally liable. 8. Prohibition on the exportation of the
licensed product
VOLUNTARY LICENSING
9. Restriction on the use of technology
supplied after the expiration of the
technology transfer arrangement.
 10. Termination Arrangement - Yes, during exceptional cases subject
11. That the technology recipient shall to the discretion of the
not contest the validity of the Documentation, Information and
patents of the technology supplier. Technology Transfer Bureau.
12. Restricting research and
Effects of compliance and non-compliance
development of the licensee
with Section 87 and 88.
designed to adapt the transferred
technology to local conditions. - If complied with, no need to be
13. Preventing the licensee from registered in the DITT Bureau.
adapting imported technologies to - Non-compliance may result to the
local conditions. unenforceability of the technology
14. Exempting the licensor from liability transfer agreement, unless
for non-fulfillment of his approved and registered with the
responsibilities. DITT Bureau.
Mandatory Provisions (Sec.88): COMPULSORY LICENSING
1. Laws of the Philippines shall govern Who may grant compulsory license?
the interpretation of the agreement
- Director of Legal Affairs.
and venue shall be where licensee's
principal office is located. Who may be granted?
2. Availability of access to
- Any person who can show capability
improvements during the term of
to exploit the invention.
the technology transfer agreement.
3. Rules for Arbitration shall be those
under Arbitration Law of the PH or
Grounds for the Grant of Compulsory
UNCITRAL or ICC
License:
4. Taxes shall be borne by the Licensor.
a) National Emergency
Rights of Licensor (Sec.89)
a) Public Interest
- Right to grant further licenses to b) Manner of exploitation by the
third persons and to exploit the patent owner or the licensee is anti-
subject matter of the technology. competitive
c) Public non-commercial use of the
Right of the Licensee (Sec.90)
patent owner without satisfactory
- Right to exploit the subject matter of reason.
the license during the effectivity of d) Patented invention not being
the Technology Transfer agreement. worked in the Philippines in a
commercial scale although capable,
Is there any exemption from above
without satisfactory reason.
requirements?
 e) Demand for a patented drug or a) Public non-commercial use.
medicine is not being met in an b) Anti-competitive practice.
adequate extent.
Compulsory License for Interdependent
Procedure of issuance of compulsory Patents.
license under TRIPS agreement:
Interdependent Patent - Second Patent
Requisites before the Director General may cannot be worked without infringing the
grant: First Patent.
- Written recommendation and Conditions for grant of compulsory patent
petition of the DOH Secretary. to the second patent owner.
TRO Issuance? a) Invention in the second patent must
have a technical advance of
- Only the SC.
considerable economic significance
General Rule: in relation to the first patent.
b) First patent owner shall have a cross
- License will be granted only after
license to use the invention in the
petitioner has made efforts to
second patent.
obtain authorization from the patent
c) Use authorized in respect to the first
owner on reasonable commercial
patent shall be non-assignable,
terms and conditions.
except with assignment of the
XPN: second patent.

a) Petition seeks to remedy practice Form and Contents of the Petition:

that is anti-competitive.
1.) In writing and verified by the
b) National Emergency.
petitioner and accompanied by
c) Demand for Drugs and Medicines is
payment of the required fee.
not being met, without any reason.
2.) Name and address of the petitioner
Notification to the Right Holder: and respondent.
3.) Number and date of the issue of the
a) National Emergency - as soon as
patent.
practicable
4.) Name of the patentee.
b) Public non-commercial use -
5.) Invention Title.
promptly
6.) Statutory grounds wherein
c) Demand for drugs and Medicines
compulsory patent is sought.
not being met in an adequate term-
7.) Prayer.
promptly
Compulsory Licensing of Patents for Semi-
Conductor Tech: Terms of Compulsory Patent

Granted only in the following grounds:

 a) Scope and duration limited to the How to surrender the license?
purpose authorized.
Through written declaration of the licensee
b) Non-exclusive and non-assignable
upon surrendering it to the office.
c) Subject matter shall devote for the
supply of Philippine Market.
d) License will be terminated upon
Requirement of Registration the
proper showing that the cause for
Amendment, Cancellation and Surrender
the grant of such has already cease
of the Compulsory License.
to exist.
e) Patentee will be paid with adequate Exemption from liability
renumeration.
- Under Section 102 any licensee
Amendment, Cancellation and Surrender working under a compulsory license
of the Compulsory License. is exempted from liability for patent
infringement.
Who may amend?
ASSIGNMENT AND TRANSMISSION OF
- Director of Legal Affairs.
RIGHTS
How?
Transmission of Rights
- Upon request of either the patentee
- Patent and applications for patents
or the licensee.
shall be protected as any kind of
Grounds? rights to the property under the Civil
Code.
- Upon showing of new facts and
circumstances justifying the Modes of transmission of rights, title and
amendment. interest to Inventions and Patents:
Cancellation 1.) Inheritance
2.) Bequest
Who may request?
3.) License Contract
- Patentee.
What can be assigned in a Patent?
Grounds:
- Entire Right, title or interest
1.) Grounds for granting has already
What if what is assigned is an undivided
stopped to exist and unlikely to
share?
recur.
2.) The licensee failed to supply the - In Such case parties become co -
domestic and market and neither owners.
started any serious preparations
Formal Requisite of an assignment
3.) Licensee failed to comply with the
terms of the license. 1.) In writing
 2.) Acknowledged before a notary Following provisions shall not apply to the
3.) Certified by the notary Application for Registration of Utility
Models:
Requirement of Recording of any
Assignments, licenses and other Sec. 43(Classification and Search)
instruments relating to transmission of Sec. 44(Publication of Patent Application)
right of the patents Sec. 45(Confidentiality before publication)
Sec. 46(Rights conferred by the Patent
Effect if not recorded?
Application after Publication)
- Void if not recorded within 3 months Sec. 47(Observation by Third Parties)
from the date of purchase or Sec. 48(Substantive Examination)
mortgage. Sec. 49(Amendment of Application)

Term of Registration?
Right of Joint Owners
- 7 Years.
General Rule: Each of the joint owners of
Can it be renewed?
the patent and the invention covered
thereby for his own profit are entitled to do - No.
the following:
a. Make
Grounds for Cancellation of the
b. Use
Registration of the Utility Model:
c. Sell
d. Import a. Failure to qualify as a utility model
with regards to Sections, 109.1, 22,
XPN: Neither of the co-owners can grant or
23, 24 and 27.
assign his rights, title or interest or part
b. Description and claims do not
thereof without the consent of the other
comply with prescribed
co-owner or without proportionally dividing
requirements.
the profits received thereof.
c. Drawing necessary for the
REGISTRATION OF UTILITY MODELS understanding of the invention has
not been furnished.
What provisions shall apply?
d. Owner of the utility model not the
- Mutatis Mutandis, provisions on inventor nor his successor in title.
patent.
Can an application for a utility
Qualification of an invention to be model/patent be converted vice versa?
registered as a utility model:
- Yes, upon payment of the prescribed
Sec. 21: New and industrially applicable, fee.
except inventive step.
Effect to filing date?
 - Filing date is the initial date of or integrated circuits at the time of
application. its creation.
3. Layout design consisting of elements
Can an applicant file two application, one
and interconnections-protected if
for U.M. and one for patent?
taken as a whole, is original.
- No, whether simultaneously or
Not covered by the protection:
consecutively.
- Industrial designs that are
INDUSTRIAL DESIGN AND LAYOUT
essentially by technical or functional
DESIGNS(TOPOGRAPHY) OF INTEGRATED
considerations to obtain a technical
CIRCUITS
result or those that are contrary to
Industrial Design - any composition of lines public order, health or morals.
or colors or any three-dimensional form,
Contents of Application:
whether associated with lines or color.
1. Request for Registration
Composition or form that gives a special
2. Information identifying the applicant
appearance and can serve as a pattern for
3. Indication of the kind of article to
an industrial product or handicraft.
which the industrial design or layout
Integrated Circuit - a product in its either shall be applied.
final or intermediate form, at least one of 4. Representation of the Article by way
the elements is an active element and some of drawings, photographs or
or all of the interconnections are integrally adequate graphic representation,
formed in and/or on a piece of material and clearly and fully discloses features
intended to perform an electronic function. wherein protection is claimed.
5. Name and address of the creator, if
Layout design or Topography - three-
the applicant is not the creator
dimensional disposition however expressed.
statement indicating origin of the
At least one of the elements is an active
right to the industrial or layout
element, and of some or all
design registration
interconnections of an integrated circuit.
Intended for manufacture.
Substantive Condition for protection: Application, may be accompanied by the
specimen of the article embodying I.D. and
1. Industrial Designs-new or
L.D.
ornamental
2. Layout designs of Integrated Can application contain 2 or more
Circuits-original, if result of the industrial designs?
creator's own intellectual effort and
- Yes, provided they relate to the
not a commonplace among creators
same sub-class of the international
of layout-designs and manufacturers
classification or to the same set or
composition of articles.
Filing Date? Industrial Design:
- Date of receipt of the application. - 5 years from the filing date of the
application, renewable for two
Filing date if the application does not meet
consecutive terms, for a period of 5
the requirements in Section 114?
years.
- Date when all the elements or - Renewal fee paid 12 Months before
requirements has been satisfied. the expiration.

Effect of failure to comply with the Grace period?

requirements?
- Yes, 6 months after the expiration of
- Application deemed to have been the term, additional surcharges shall
withdrawn. be paid.
When does the Office shall order the Layout design:
issuance of Certificate of Registration of
- 10 Years with no renewal
the Industrial Design/layout-design?
- Validity counted from date of
- Once condition in Sec. 113 has been commencement of the protection
fulfilled.
Shall commence on the following:
Form and Contents of the Certificate?
a. Date of first commercial exploitation
- Established by the registration anywhere in the world with consent
of the right holder, provided there is
Registration?
a filed application for registration
- Shall be published within 2 years from date of
exploitation
What if there is a change in the Identity of
b. Date of filing
the Proprietor?
Following provisions shall apply mutatis
The Register shall change this in the record
mutandis to Industrial design registration:
upon:
Sec. 21 for Novelty
1. Proof, furnished to it
Sec. 24 prior, if disclosure is contained in a
2. Payment of fees accompanied by
printed document or any tangible form
the request
Sec. 25 Non-Prejudicial Disclosure
Effect of failure to pay the fee? Sec. 28 Right to Patent
Sec. 29 First to file rule
- Deemed that there is no change in
the identity filed, the proprietor and Sec. 30 Inventions created pursuant to a
his representative shall be the same. commission
Sec. 31 Right of Priority application for
Term of the Industrial Design and Layout
industrial design shall be filed within 6
Design Registration:
months from earliest filing of foreign
application
Rights of an owner of Lay-out design
Sec. 33 Appointment of agent
Registration
Sec. 51 Refusal of the Application
Sec. 56 - 60 Surrender, Correction and a. Right to Reproduce.
Changes in the Patent b. Right to Sell.
CHAPTER VII Remedies of a person having
Limitations of Lay-out rights
Right to a Patent
CHAPTER VIII Rights of Patentees and No Right to prevent the selling,
Infringement of Patents reproducing in the following
CHAPTER XI Transmission of Rights circumstances:
1. Reproduction for the sole purpose
What if the essential element of the
or for the purpose of evaluation,
industrial design is obtained from the
analysis, research or teaching.
creation of another person without his
2. If layout design created on the basis
consent?
of such analysis or evaluation which
- Protection under this code cannot in itself is original
be invoked. 3. Layout design is incorporated in a
product and put on market with the
Following provisions shall apply mutatis
consent of the right holder
mutandis to layout-design of integrated
4. For integrated circuit, person
circuits registration:
performing the act has no
Sec. 28 Right to Patent knowledge or reasonable ground to
Sec. 29 First to file rule know that it used an unlawfully
Sec. 30 Inventions created pursuant to a reproduced layout design, provided
commission that after the time person received
Sec. 33 Appointment of agent sufficient notice, he can only
Sec. 56 - 60 Surrender, Correction and perform such acts on remaining
Changes in the Patent stocks on hand and be liable to pay
CHAPTER VII Remedies of a person having the right holder 5% of net sales or
Right to a Patent other reasonable royalties
CHAPTER VIII - Rights of Patentees and 5. Act performed in respect of an
Infringement of Patents, provided lay-out identical layout design which is
design rights and limitation of lay-out original and has been created
design rights shall govern. independently by a third party.
CHAPTER X Compulsory Licensing
Cancellation of design registration
CHAPTER XI Assignment and Transmission
of Rights Who may petition?
 - Any person upon payment of the
required fee, and during the time of
the term.
Where to petition?
- Director of Legal Affairs.

Grounds for Cancellation:

a. Not registrable within the terms of
Sec 112 and 113.
b. Subject matter not new.
c. Subject matter extends beyond the
content of the application as
originally filed.
Limitation to the Ground of Cancellation:
- If for a part only, cancellation may
be effected to such extent only.
Cancellation of a layout design of
Integrated Circuits:
Grounds
a) Layout design not protectable.
b) Right holder not entitled to
protection.
c) Application not filed within two
years from the time of its first
commercial exploitation.
Effect of cancellation?
a. Shall be null and void from the
beginning.
b. Expunged from the records of the
IPO.